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  1. Can the owner who stopped paying annual patent fees (and thus the patent got expired) - renew it within the 20 years if he suddenly realizes that it is worth it?

  2. And if yes - during what time period can he do so? Maybe if there is a delay of several month till 2 years, it might be OK, but if the payment break was around 10 years?

  3. Can he reinstate it also retroactively, i.e. creating legal continuum, or only renew from certain date and upwards?

Patent in question - 8544207.

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Only the applicant can petition to reinstate and they need to establish that the delay in paying was unintentional and account for the whole time period. This includes the period from when the applicant realizes the patent expired and the petition was filed.

The USPTO might not seriously challenge the assertions made in petition but, if it is reinstated and the patent owner attempts to enforce it they will find the patent weakened if much time has occurred after the grace period. Disproving the unintentional delay might be a target of a defense in court.

2590 Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent

In the section of the MPEP on petitioning for reinstatement it says, if granted by the Director, it is as if it never lapsed. But in important respects that is not operational.

2591 Intervening Rights in Reinstated Patents says that anything that would be infringing done after the 6 month grace period and before it was reinstated has certain rights and that a court may let activities started then to continue after reinstatement.

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  • Thank you! So practically it would be difficult to prove that delay in paying of, let's say, 5 years was unintentional... Things like applicant was in coma for several years might work, but not usual circumstances... Commented Mar 20, 2023 at 21:08
  • There used to be a 2 year limit and there was also an “unavoidable” standard but both of those concepts are gone.
    – George White
    Commented Mar 21, 2023 at 1:31

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